Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Friday, 30 June 2006

Part 3 of the bimonthly European Commercial Cases, published by Sweet & Maxwell, has now been issued. This series is not a mainline intellectual property law report, but frequently carries cases of great interest and relevance to the IP community (or at least to the IPKat, who regularly checks it out).

One such case is reported in this issue: Société Belge des Auteurs Compositeurs et Editeurs v SA Productions & Marketing, a ruling of the Cour d'appel of Brussels from November 2005 that the company managing Belgian copyright in musical works was abusing its dominant position by offering royalty terms that discriminated against smaller users.

Can't get no satisfaction?

Then try OHIM, the Office for Harmonisation in the Internal Market - the office that grants Community trade marks and registered designs. You can read OHIM's response to the results of its user satisfaction survey here. The result of the survey, the IPKat notes, is that OHIM is indeed satisfied with the level of service it provides ... Come now, chides Merpel: that's not fair! Considering how many difficult people the Office has to deal with, and how vulnerable it is to criticism, it does pretty well. But it takes a brave applicant to say he's satisfied if he's paid his filing fee (and his professional representative's bill) but still can't get Community-wide protection of CHEESY BURGERS for cheeseburgers.

To participate in OHIM's next satisfaction survey click hereHow to win friends and influence people here

For lasting pleasure ...

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IPKat co-blogmeister Ilanah has written an article on why the Art.6 defences may not be available in most EU dilution cases and why s.10(6) may be completely off-limits in such cases. Along the way the article traces the origins of the honest practices proviso, takes a look at the US concept of nominative fair use and examines what the implications are for the defences with regard to all types of infringemt.

News of the decision in the decision of the Court of Appeal for England and Wales in Ranbaxy UK Ltd v Warner-Lambert; Arrow Generics [2006] EWCA Civ 876 on 28 June has been trickling through the system, but the decision of Lords Justices Chadwick, Jacob and Neuberger has not yet been BAILII'd. The IPKat found the summary on subscription-only service Lawtel quite helpful though.

Warner Lambert was the owner of two patents (633 and 281) for atorvastatin, a cholesterol synthesis inhibitor (better known as LIPITOR). Patent 633 covered two structural formulae (I and X) for an enantiomer. According to Ranbaxy it was common in organic chemistry to use the structural formula of a single enantiomer to denote the racemate (basically the 'left-handed' form) or 50/50 mixture of two enantiomers of a chiral molecule. Since the racemate was to be considered as a distinct compound from either of the two enantiomers that were found in it, Ranbaxy said that the specification made it clear that the compound with which it was concerned was the racemate and that, in its context, formula I was being used to refer exclusively to the racemate. Since the claim was limited to the racemate, Ranbaxy's enantiomer did not fall within it. According to Pumfrey J, 633 covered both the racemate and the individual enantiomers. However, he also held that 281 was anticipated by a prior co-pending application and was obvious over a prior published international application.

Ranbaxy appealed against the refusal to grant a declaration of non-infringement of 633; meanwhile Warner-Lambert cross-appealed against the finding that 281 was invalid. The Court of Appeal dismissed Ranbaxy's appeal, holding as follows:

* The skilled reader of the patent would know that the enantiomer in issue was the form which had most or all of the pharmaceutical activity. He'd expect the patentee to know that too.

* There was simply no rational basis for supposing that the patentee would want to exclude the pure enantiomer which, as he would know, was the substance that really mattered.

* Although the actual drawing of figure I and of figure X showed just the enantiomer it was common ground that, in practice, a figure showing that structure might mean its racemate and the judge had held that, in the context of the patent, figure I would have been understood to show the racemate. However there was no rational reason why the figure should mean only the racemate in the context of the patent and there was no convention that such a figure could not mean both the racemate and/or either enantiomer.

* The unpublished earlier co-pending application explicitly disclosed that one of the things that could be made was the single enantiomer of the acid and it was that acid which could be used make the calcium salt. Since that way of carrying out the teaching of the earlier patent would necessarily infringe the later claim, that claim was invalid as lacking novelty.

The IPKat is pleased that the Court of Appeal has spelled out a clear message on the status of racemates; he awaits sight of the judgment before he can say whether there's anything else of pressing legal interest in it.

Thursday, 29 June 2006

The Guardian reports that Google has won a victory for its GooglePrint service in Germany. Publisher Wissenschaftliche Buchgesellschaft (WBG) argued that the scanning of its works infringed its copyright and that this was actionable in Germany.

The spokesman from the German printers' association (left) could not be reached for comment

However, the Hamburg Regional Court’s copyright chamber told WBG that is application for an injunction was unlikely to succeed. Motivating this finding seems to be the fact that the scanning took place in the US, not Germany, so US law would apply and US law has more generous fair use provisions. Because of the court’s indications, WBG withdrew its application for an injunction.

The IPKat is moderately surprised. He wasn’t expecting Google Print to clock up many copyright victories. However this wasn't an endorsement of the Google Print project - just a finding of no jurisdiction.

Advocate General Eleanor Sharpston QC has delivered her Opinion this morning in Case C-36/05Commission of the European Communities v Kingdom of Spain. This is an action brought by the Commission against Spain for failing to implement Articles 1 and 5 of Council Directive 92/100 of 19 November 1992 on rental and lending rights and on certain rights relating to copyright in the field of intellectual property. She advises the European Court of Justice to conclude that Spain is in the wrong.

The IPKat assumes that the court will obliging rule accordingly, as is the normal practice when EU member states are sued for non-implementation or mis-implementation of IP Directives. Merpel agrees and says, isn't it a shame that the ECJ - which is already busy enough - has to waste its time considering whether the countries of the Union have done what they agreed to do. What's more, it's virtually 12 years since the Directive should have been implemented ...

The IPKat enjoyed this cute item in US satirical journal The Onion about integrity-themed burger restaurants. It's a must-read for anyone who enjoys pondering issues at the interface of brand ethos and consumerism. One of the planks on which the burger chain proposes to trade is that

"we will offer full, voluntary disclosure on the ingredients of all our dishes, including our world-famous secret pancake recipe, as our customers have the right to know exactly what makes them so darn fluffy".

Latest IP&T

The June issue of LexisNexis Butterworths Intellectual Property and Technology Cases has now reached the IPKat. This series, the paper-based support for the company's IP&T online subscription service, has a handsome sleek glossy black cover - but it's the contents that most impress. This issue contains reports on seven cases, including

* CFPH LLC v Comptroller of Patents, an important UK decision of Peter Prescott QC, sitting as a Deputy Judge, on how to test for patentability of inventions that have a strong element of computer software or business methods;

* Madaus v OHIM, a ruling of the Court of First Instance of the European Communities on finding similarity between trade marks that are nearly the same because they both have dominant, but descriptive, prefixes (in this case ECHINAID and ECHINACIN, where ECHINA- is short for the ingredient, echinacea (above, right);

* J Pereira Fernandes SA v Mehta, a Chancery Division from Manchester on whether the requirement that a guarantee by in writing and signed by the guarantor is satisfied by sending an email.

Wednesday, 28 June 2006

Slashdot reports that Spain is introducing a tax on all blank media, including cd-r, dvd-r, flash media, printers, scanners and mobile phones.

The IPKat reckons that, if a levy is being collected to recompense copyright holders, this should be reflected in a reduced royalty stream from other forms of copyright enforcement.

Prospective cost-capping in IP cases

Mann J has delivered what he states is, to his knowledge, the first case requesting a prospective cost-capping order in an IP case. The claimant in this passing off action (Andrew Knight v Beyond) is instructing his solicitors under a conditional fee agreement but does not have after-the-event insurance cover for any costs that he would have to pay the defendants if he were unsuccessful. The defendants sought an order which would prospectively limit the amount of costs which they would be liable for if the claimant succeeds in this action and get an order for costs against them.

The order was refused because Mann J found that the costs could be adequately dealt with through an after-trial costs assessment. Although there were certain ‘danger points’ identified with regard to proposed expenditure, the judge hearing any action regarding costs would be able to adequately police them ex post facto.

The IPKat notes that there’s a tricky balancing act to be performed here. While it would be undesirable for judges to interfere too closely in how litigants choose to run their cases, by the time it’s after the event, it may be too late for unreasonable costs to be recouped.

Yesterday IPKat co-bloggie Jeremy asked for helpful information concerning TV programme format rights. He has now been literally deluged with helpful emails from loads of readers. In the fullness of time he will personally acknowledge all responses but, in the meantime, he says a generalised "thank you" to all who answered the call.

Comments on IPKat blogs

The IPKat is happy to receive comments on his musings, which is why he has activated the "Comments" facility at the end of each posting. He doesn't think, though, that this facility is the right place for people to advertise their goods and services. This morning he deleted a comment that consisted of an advertisement for a commercial product aimed at individuals who want to file their own US patent applications. The IPKat feels that this is an abuse of the Comment facility and hopes that potential free-riders will at least have the courtesy to ask before seeking to distribute commercial content free of charge.

Fighting IP crime ... it's NIPER!

Here's a UK Patent Office press release announcing the publication last week of the National Intellectual Property Enforcement Report for 2005 (NIPER for short). The IPKat says it makes depressing reading for IP owners and legitimate businesses: he feels the main reason that intelligence and enforcement figures have improved is that there's now so much infringement that you can hardly miss it. Merpel agrees: this is a fight which, without total support from government, the courts and - most importantly - the public, we can't win. But we can't quit either.

Tuesday, 27 June 2006

The IPKat is still recovering from the shock of reading a recent OHIM Board of Appeal decision did not bar the term EEC – European Electronic Confidence from being registered as a mark for goods and services in Classes 9, 35, 36, 38 and 41. The decision is only available in French, but the IPKat has pieced it together with the help of Babelfish.

The IPKat couldn't believe his eyes

The examiner turned the mark down as it conflicted with Art 6ter of the Paris Convention but the Board has annulled her decision and has remitted the case for re-examination. The Board felt that the presence of the term European Electronic Confidence would remove any possibility of confusion with the EEC as we know it. Moreover, consumers would know the EEC’s role in telecoms and the other services applied for was legislative, rather than offering such services.

Merpel says that this just goes to show that he who dares, wins (sometimes).

OHIM backs Anheuser BuschAn OHIM Board of Appeal has recognised Anheuser-Busch’s right to register BUD as a CTM according to Chron.com. The full text of the decision isn’t available on the OHIM website but an excerpt provided by Anheuser Busch suggests that the key factor was that BUD wouldn’t be perceived as a geographical indicator.

Speaking at a conference in Moscow today, IPKat co-blogmeister Jeremy was asked if there were any good online resources for TV programme production companies that were interested either in (i) seeing what TV programme formats are available for licence and (ii) putting their own programme formats up, so that interested licensees could contact them.

Monday, 26 June 2006

The Register reports that a band of UK telecom companies aren’t too happy. They object to the registration by Wireless Facilities Inc of NEXT GENERATION NETWORKS. They argue that Next Generation Network is a generic term for networks which use digital technology to connect phone calls and other network traffic more efficiently than traditional telecoms networks. Moreover, Ofcom, the UK telecoms regulator has set up an industry group named Next Generation Networks UK to oversee the establishment of such networks.

The IPKat wonders if this is an example of a term which is generic among those in the trade but isn’t familiar to the eventual consumers of such services.Coming up

On Wednesday – Louis Vuitton v Google in the Paris Court of Appeals (according to the International Herald Tribune)On 13 July – the Advocate General’s Opinion in the Dyson trade mark case.

The IPKat found this case on subscription service Lawtel (it's not yet available on BAILII). It's Derek Hughes v Neil Paxman [2006] EWCA Civ 818, from the Court of Appeal on Friday (the court consisted of Master of the Rolls Sir Anthony Clarke, together with ex-Patents Court judges Lords Justices Jacob and Neuberger).

Hughes and Paxman, who were co-proprietors of a patent for a drinks cooler, formed a company to exploit that patent. Subsequently Hughes and Paxman fell out, Paxman resigned as a director and the company was unable to take any commercial decisions concerning the patent.

Paxman wanted to license the patent. However, the Patents Act 1977, s.36 entitled a co-proprietor to exploit the patent himself but not to sub-license its use by a third party. The Comptroller of Patents had power, on a reference under s.37 of the same Act, to determine "whether any right in or under the patent should be transferred or granted to any other person or persons" and to make an order "granting any licence or other right in or under the patent".

Hughes claimed that

* s.37 only concerned the determination of legal rights, but did not confer a wide jurisdiction upon the comptroller to grant or order a co-owner to grant a licence to third parties

* any jurisdiction to grant such a licence was vague, arbitrary and contrary to the European Convention on Human Rights 1950 (Protocol 1 Article 1);

* Paxman, acting while he was a director of the company, was in breach of his fiduciary duties to the company by seeking the licensing of the patent to a third party.

The Court of Appeal, upholding the decision of Mr Justice Kitchin, dismissed Hughes' appeal on the following grounds:

* on the application of one co-proprietor of a patent, the comptroller did have jurisdiction under s.37 to grant licences under the patent.

* Parliament could not have intended that exploitation of an invention could be frustrated by a deadlock situation and there was no doubt that the same jurisdiction to grant licences in such circumstances existed under the Patents Act 1949.

* the discretion conferred by that section was not so wide and unguided that it amounted to an arbitrary power to cut down the rights of a co-owner or violated the principle of legal certainty.

* so long as the Comptroller acted rationally, fairly and proportionately and hadregard to all the circumstances of the case, there was no arbitrary power but merely the power to produce a fair commercial solution when co-owners could not agree.

* any violation of fiduciary duty was a matter between the company and Paxman, but was not a matter that Hughes himself, as a mere shareholder could object to. In any event, on the facts there was no breach of fiduciary duty.

The IPKat is glad that the Court of Appeal has put beyond doubt the suspicion that s.37 was either insufficiently broad to confer the power in question or contrary to human rights: there's no value to patents that are allowed to be tied up, unused, when the public at large is restrained from using them. Merpel agrees and notes that this is yet another case in which UK intellectual property rights have seen off a spurious challenge based on human rights.

Earlier IPKat posting on this dispute, plus comment, hereHow to make ice at room temperature here

Sunday, 25 June 2006

According to an Indian Government press release the Indian Minister of State for Commerce is in the process of identifying products for geographical indication protection to be registered with Geographical Indications (GI) Registry, Chennai. Amongst those being discussed are:

Friday, 23 June 2006

The IPKat thanks IPWorldOnline's Richard Evans for tipping him off about the latest news on the French copyright bill saga. According to IPWorldOnline, members of the French Senate and Assemblée Nationale (French Parliament) met yesterday morning to draft a new text proposing amendments to France’s Copyright Law. Details have not yet been made public but, according to a representative from the Assemblée Nationale, they will be uploaded to the Assemblée’s website this afternoon. Previous proposals included loosening restrictions on CD and DVD copying and forcing Apple to make its iTunes service compatible with other MP3 players.

Right: Victor Hugo, father of French copyright law, ponders over whether to go for iTunes or one of its competitors ...

Previous IPKat post on this topic here.Short introduction to French copyright law hereFrench cultural treasure (according to French Prime Minister Dominique de Villepin) here, here and here

Latest BioSLR

That waiflike temptress among legal periodicals, Lawtext's fabulous and eccentric six-times a year BioScience Law Review, has just produced issue 6 for 2004/5. The contents include Michael Blakeney's playful account of v-GURTs which should never, well hardly ever, be confused with t-GURTs (or yo-GURTS, says Merpel).

Above, right: a v-GURT. NOT to be confused with the t-GURT (below, left)

There's also a four page article on the recent UK House of Lords decision in Synthon BV v Smithkline Beecham, by three authors from Freshfields whose combined names are not much shorter than the article itself.

The IPKat has just spotted a bit of recent history - on 9 June the European Commission's Official Journal published the text of Regulation 816/2006 of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems. This Regulation, which enters force on 29 June - the 20th day following its publication in the OJ, implements the World Trade Organization's Doha Declaration, which recognises that every WTO member has the right to utilise compulsory licensing provisions to protect its health, even if it lacks the manufacturing capacity to make products under the patent itself.

Regulation 816/2006 essentially provides as follows:

* Article 1: Any person may apply for a compulsory licence, in accordance with conditions laid down in Articles 6-10;

* Article 3: the national authority for granting ordinary compulsory licences is to be competent to deal with these Doha licences, unless the contrary is provided;

* Article 4: countries to benefit are as follows - least developed countries on the UN list, certain other countries notified to the WTO Council, non-WTO countries on the OECD Development Assistance Council list, having per-capita income of less than US$745 a year;

* Article 7: the patent rights owner must be notified and has a right to comment and to provide information - but not, it appears, to object;

* Article 9: applicant countries must first show that they tried to negotiate a voluntary authorisation from the patent owner;

* Article 10: compulsory licences are non-assignmable and non-exclusive, being limited to the purpose for which they are needed. The patent owner is entitled to reasonable remuneration from the licensee [this is a big and important Article];

* Article 13: importation into the EU of pharma products made under compulsory licence is basically banned.

The IPKat hopes and prays that this precious opportunity to benefit the poor, the sick and the needy will not be cynically abused by a coalition of dishonest importers, transshippers and criminals who will see this as a challenge to them to see how quickly they can get Doha drugs into the EEA and sell them in strong-currency countries. Merpel adds, there are no criminal provisions in the Regulation and a lot of patented pharma products are dirt cheap to make: if the worst that can happen to an unlawful importer in practice is that he can lose his consignment, he may as well just carry on trying to get the goods in until the Customs authorities slip up and he wins his jackpot.

The jumbo-sized double issue of Sweet & Maxwell's European Trade Mark Reports for July-August 2006 has once again been happily published early. This issue includes the following cases:

* Esso plc v Greenpeace France (Cour d'appel de Paris, France) - what we think is the last of a series of cases arising from Greenpeace's parody of the Esso trade mark on its website;

* both of the 02 v Hutchison 3G cases before the High Court, England and Wales - the short one, where the judge refuses to allow evidence explaining the results of a survey that he didn't give permission for, and the big one, where Mr Justice Lewison tries to get to grips with an elusive bubble trade mark comparative advertising problem, and the law goes pop;

* Elizabeth Emanual v Continental Shelf 128 Ltd, where the European Court of Justice affirms that a person, having sold their name as a trade mark, can't objecct to any honest use of that trade mark by someone else.

As usual, if there are any cases you'd like to see reported in the ETMR, tell the IPKat here and he'll see what he can do.

The Daily Telegraphreports that Disney have backed down in a dispute over Winnie the Pooh. A pair of grieving parents of a stillborn child asked stonemason Aaron Clarke to include an image of Winnie the Pooh on the deceased child’s headstone. The parents approached Disney, who informed them that including the image would infringement Disney’s copyright. However, after being contacted by reporters, Disney has now said that it is ‘in the process of fulfilling their original request’.

The IPKat says that technically, Disney’s within its rights on this one. There’s no general exception in UK copyright law that would cover this situation. However, it would be a bit mean to stop the parents from using the image and it doesn’t seem right to welcome your character being a cultural icon up until when its fans actually want to make reference to it, and then to get nasty at that point.

Stop w(h)ining

Yesterday Mariann Fischer Boel, Member of the European Commission responsible for Agriculture and Rural Development announced a range of measures to reform the EU wine market (press release here), in the face of 3 perceived problems:

1. falling consumption amongst the young2. an increase in New World exports, compared to EU exports3. increased imports of New World wines, such that ‘What was once a trickle is becoming a flood – to the point where our imports could soon overtake our exports.’

A result of these problems has been an enormous wine surplus (leading to the rather delicious-sounding ‘European wine lake’) and an increased reliance on ‘crisis distillation’, whereby wine is turned into industrial ethanol.

Part of the blame is based on a subject beloved to IP lawyers – geographical indication protection. Says Commissioner Fischer Boel:

‘[O]ur system for defining and labelling wines is not in line with many broader EU principles and international rules. Some of its elements hold back our marketing efforts – especially in the case of certain table wines.

So we load restrictions onto our producers while their New World competitors work with light-touch regulation. Faced with a demanding fight for international markets, we shoot ourselves in the foot’.

Instead she proposes:

‘With regard to wine quality definitions and labelling: it's time to cut through the complications of our present system.

Here again, some of our rules run counter to WTO provisions under the TRIPS agreement, and must be changed. It would also be helpful to bring them into line with the EU's general approach to Protected Geographical Indications and Protected Designations of Origin.

In particular, we should end the current restriction under which table wines without a GI cannot display their vine variety or harvest year. This rule only ties down our marketing efforts’.

Full legislative proposals are expected in January 2007.

The IPKat, ever the fan of competition, even when the competitors are based outside the EU, says ‘Glass of Chateau Protectionism 2006 anyone?’

Thursday, 22 June 2006

Confectionery appeals reach a sticky endThe IPKat is not surprised that, in Cases C-24/05 P and C-25/-05 PAugust Storck KG v OHIM, the European Court of Justice dismissed the appeals of August Storck KG against the Court of First Instance's dismissal of its appeals against the Board of Appeal's dismissal of its appeal against the examiner's thoroughly correct decision to refuse registration of its three-dimensional marks (depicted here) as Community trade marks.The Kat is horrified to see how much time and effort has been expended in demonstrating, in terms of sound legal logic, that these totally unmeritorious non-marks are unregistrable. These rulings are 78 and 89 paragraphs long, respectively. Contrast this with the really important cases: Adidas v Fitnessworld was only 42 paragraphs long, Sabel v Puma 27 and even Windsurfing-Chiemsee (remember how endlessly long it was at the time it came out) was just 55 paragraphs.

Never mind, says Merpel: the applicant's product is quite delicious and is recognised by the public under quite a popular trade mark, the word mark WERTHERS.

This morning’s BBC Radio 4 Today programme (listen here – 08.23) reported on the controversy surrounding Alan Moore and Melinda Gebbie’s Lost Girls. This graphic novel imagines a meeting between Wendy (of Peter Pan), Alice (of Alice in Wonderland) and Dorothy of The Wizard of Oz) once they have grown up. According to the publisher’s website:

"Now like us, these three lost girls have grown up and are ready to guide us again, this time through the realms of our sexual awakening and fulfilment. Through their familiar fairytales they share with us their most intimate revelations of desire in its many forms, revelations that shine out radiantly through the dark clouds of war gathering around a luxury Austrian hotel. Drawing on the rich heritage of erotica, Lost Girls is the rediscovery of the power of ecstatic writing and art in a sublime union that only the medium of comics can achieve. Exquisite, thoughtful, and human, Lost Girls is a work of breathtaking scope that challenges the very notion of art fettered by convention. This is erotic fiction at its finest".

However, Great Ormond Street hospital, which has a perpetual right to a royalty in respect of uses of Peter Pan, thanks to a bequest by JM Barrie and s.300 of the CDPA and is not happy. In particular, they object to a connection with paedophilia since they are a children’s hospital (at one point Lost Girls intimates that a paedophile is present). Dark words were being said in the interview concerning Lost Girls being banned in the UK and/or Europe.

The IPKat thinks that the hospital’s approach is flawed for a number of reasons. Under standard copyright law, it seems improbable that merely taking a character and placing her in a new setting would constitute taking a substantial part of the copyright work. Copyright in Peter Pan expires in 2007 (70 years after Barrie’s death in 1937). After that date, the hospital will have to revert to s.301, but that section only gives the hospital a right to royalties, not the full rights of a copyright owner. This would mean that the hospital could make money from the novel, but not that it could stop its distribution. In any event, it seems undesirable to prevent such parodies and as for the connection between the hospital and paedophilia, the IPKat doubts whether the majority of the public are aware that the hospital is the copyright owner, and so a link between the book and the hospital is unlikely (but is made more likely if hospital publicly objects to the publication).

Wednesday, 21 June 2006

The IPKat thanks his friend Jim Davies for drawing his attention to the report in The Register of the abandonment by Sir Stelios Haji-Ioannou of his action against Karl Kahn. The dispute arose after Stelios claimed that Kahn's EasyPizza.co.uk domain infringed the rights of EasyGroup (including EasyJet and other "easy" enterprises, including EasyPizza.com) in the prefix "easy".

Kahn, who had been trading since 1997 and registered his domain name in 1999, has apparently persuaded EasyGroup to sign a consent order covering his costs, estimated at £135,000, and agreeing not to interfere with his business or bring any further court action without the approval of the court.

The IPKat believes that many other actions brought by the easyGroup against users of the "easy" prefix are still extant. Merpel says, I wonder how long it will take for the word "easy" to gain such a large degree of secondary meaning through use by easyGroup companies that it won't even mean "the opposite of hard" any more.

Make an easy pizza hereMake a difficult pizza hereWhat Karl Kahn's solicitors said about the settlement here

Instructions for use

Did you know - footballers have to be taught how to wear their shirts properly when they score their goals. Otherwise brand-conscious sponsors get upset. The picture below came via the IPKat's Polish friend Tomasz Rychlicki, who has far better things to do than watch the football.

Good news for the FA that has nothing to do with Messers Rooney or Owen.

At the end of April, the FA defeated an opposition to register the ‘three lions’ shield, together with the words THE FA for a wide range of goods and services.

The FA applied to register a mark consisting of the England ‘three lions’ shield, with the words ‘The FA’ in a black box above the shield for a wide range of goods. Henkel opposed the application in relation to goods in Classes 3 (toiletries etc), 5 (medicated toiletries etc) and 21 (items related to cleaning of the body and hygiene etc), based on its UK registration of the word Fa in the UK in those classes.

The opposition was refused:

*Henkel’s mark benefited from enhanced distinctiveness. Henkel claimed that the mark was well known in Europe, but the hearing officer found that reputation in Europe was not relevant before the UK Trade Marks Registry. Even if it had been, Henkel had not submitted sufficient evidence to show reputation in any particular country, let alone the whole of Europe. However, the Fa mark was inherently distinctive for the goods in question.*The Football Association could not benefit from its reputation in relation to football for the goods under attack in Classes 3, 5 and 21.*Certain of the challenged goods were identical and some were merely similar. The hearing officer proceeded on the basis of an assessment of the likelihood of confusion in relation to the goods which were identical, on the basis that if there was no confusion in relation to the identical goods, there could be no confusion in relation to the similar goods.*The average consumer would not dissect the Football Association’s mark into its verbal and figurative components. The word ‘The’ would be dismissed as non-distinctive, but the shield element would retain its distinctiveness, even when the entire mark was reduced in size. In fact, when the mark was reduced in size, it was the verbal element that became difficult for consumers to make out. Thus, the marks were visually or aurally quite different.*Henkel’s mark had no conceptual meaning. On the other hand, the word element of the Football Association’s mark would be seen as referred to the first or original football association, and device mark would be seen as representing England.*As a result, on a global appreciation, the marks were not similar enough to lead to confusion and the opposition failed.

The IPKat reckons that at first it sounds a bit odd to say that reputation in Europe doesn’t give enhanced protection since we are part of Europe, but on reflection, it’s the only answer than can be right if reputation in the UK hasn’t been made out.

The questions referred by the High Court in Oakley v Animal have been removed from the ECJ register. There's no clue as to why, and it seems like we'll be kept in suspense as to what happens if a Member State implements an optional provision out of time...

Tuesday, 20 June 2006

The Dutch Court of Appeal has ordered that the Zoekmp3.nl website must be shut down according to the BBC website. Zoekmp3.nl did not host copyright-infringing music, but instead provided deep links to infringing music on other sites. The court gave short shrift to the website’s argument that it had put a disclaimer on the site warning people not to infringe copyright, saying:

"Such a warning ignores the reality that the lion's share of visitors are looking for unauthorised MP3 files".

The fact that Zoekmp3.nl would benefit financially from the links because of increased traffic to the site was also noted.The IPKat would be mighty interested to know the precise ground on which the infringement was found.

Patent Framework Document

The Patent Framework Document 2006 is now online. It’s short but awfully racy.

The IPKat thanks Leonie Kroon, who was first with this item, as well as from Vivien Rörsch, Advocaat at De Brauw Blackstone Westbroek (this firm has prepared a neat little summary of the case, with comments by Tobias Cohen Jehoram) and from Piter de Weerd (www.Boek9.nl).

Last Friday the Dutch Supreme Court gave judgment in Kecofa v Lancome in the dispute between them over whether copyright subsists in a perfume. Leonie has summarised the matter as follows:

The key points are as follows:

- The Dutch Copyright Act contains a non-exhaustive list of things that can be a 'work' for the purposes of the act; the Supreme Court says there is no reason why a smell should not be included.

- To get copyright protection, a smell must be a creation that is visible to humans, with its ‘own’ and ‘original’ character and reflecting the personality of the creator.

- The Dutch Copyright Act does not protect a work when its ‘own’ and ‘original’ character only applies to that what is necessary for getting a certain technical effect. A perfume is not a work having a mere technical effect.

- The Supreme Court did not find it relevant that the human smell organ [the IPKat thinks this might just be the nose ...] has restrictions in distinguishing between different smells, nor did it find it relevant that the ability to distinguish between smells differs from person to person.

- Evidence of infringement of the work can be given on the basis of laboratory tests and panels of people asked to smell it. Judges will not be required to smell it for themselves in future cases.

- The Supreme Court was of the opinion that it was also not relevant that due to the specific nature of smells, not all provisions of the Copyright Act can be applicable to it. For instance the normal use of a perfume, which a user cannot be prohibited from, will due to its nature necessarily involve ‘distribution’ of the copyright work.

The IPKat remains sceptical as to whether this decision, and its French counterpart, have anything to do with copyright at all; he wonders what Victor Hugo, founding father of the Berne Convention, would have made of it and considers that this sort of creation is more appropriately protected by unfair competition rather than by author's right.

Monday, 19 June 2006

BusinessWire reports that the Supreme Court has refused to hear an appeal by Cubatabaco against the Second Circuit’s decision that General Cigars is entitled to own the COHIBA trade mark in the United States. The suit has been rumbling on since 1997.

The IPKat is going to refrain from making any comments about there being no smoke without fire.

Patent open hearing

If you find yourself in Brussels on 12 July, you’re in for a treat. The EU is holding a public hearing on the patent system, as step 2 of its public consultation on the future of European patent policy. Or at least, you would be in for a treat – despite the fact that the press release bears today’s date, registration closed on 5 June.

The Financial Times has just informed the IPKat that the United States and the European Union will pledge tomorrow to take joint action to stem the world’s swelling tide of fake goods. Following a tenfold rise in trade in counterfeits in the past six years, the EU and the US propose to share intelligence and to coordinate policy at international bodies such as the World Intellectual Property Organisation, aiming first at Russia and China, then at Latin America and the Middle East.

EU authorities are reported to have seized more than 103 million items of counterfeit goods in 2004, up from just 10 million in 1998. A European official adds:

“The lion’s share were heading for the least developed countries in the world. This is not just a rich-country problem. And what we seize is just the tip of the iceberg”.

The IPKat notes that it's the old NATO partners ganging up against the Eastern threat again. Wouldn't it be nice, though, if we were all on the same side? After all, fake medicines and brake-pads will harm the Chinese and the Russians as much as they harm us - and which governments, East or West, benefit from trading that doesn't show up in the official books, if it can't be taxed or controlled? Merpel wonders if the big dealers in counterfeits in the East are the equivalent of War Lords, with their feifdoms and the money to buy the loyal support of their followers.

Trouble ahead - not necessarily!

There May be Trouble Ahead is the alarming title of a cute little book by Lex van Wijk, subtitled "a practical guide to effective patent asset management". The author (right), a patent attorney who has worked at Royal Dutch Shell, at Burmah Castrol as group patent manager,and at Siemens AG, now works at Vereenigde, where he advises clients on intellectual property matters.

What the publisher says:

"Patent assets are currently important strategic business tools. Their presence or absence can make or break technology-based companies. Patent asset management has therefore become a core responsibility within companies. This book discusses in a lucid manner the elements that need to be covered to ensure that patent assets are used to their full potential. It provides simple and practical management tools to realize alignment of patent, business, and research & development strategies. Additionally, this book will help managers understand why any decision regarding patent assets needs to be an informed business decision, and how these assets can contribute to the company's future success, if not survival".

What the IPKat says:

"As the author says in his Preface, these are awkward times for in-house patent professionals. They are even harder now, with the outbreak of "trollism" in the United States raising questions that CEOs aim at blameless patent staff along the lines of either 'what can we do about these patent trolls?' or 'why can't we be trolls too?'. This book won't make things easier for the patent pro, but it will give him a better idea of which problems he can deal with and which he should duck or pass on to someone else. The main problem facing in-house patent pros is that they are often expected to be omniscient polymaths, coping with economic, legal and strategic issues while exercising management skills. A second problem is that much of the information that any in-house patent pro needs in order to dispense good advice is simply not available to him - or not easily accessible - at the time he most needs it. This book will direct him to the information he most keenly needs when steering his company's patent assets clear of the many obstacles (self-induced and otherwise) that must be negotiated on the path from expenditure to profit".

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